The EPO has deployed its Deep Tech Finder tool. The Deep Tech Finder is a tool for finding investment-ready European startups that have patent applications at the EPO.
More information is available at the EPO’s FAQ page.
Bidding farewell to the EPO’s 10-day-rule
The EPO’s 10-day-rule will be abandoned from 1 November 2023. A safeguard mechanism will be effective in case a document is received late (more than 7 days late), with the burden of proof in case of disputed notifications being with the EPO. The new regulation applies to documents notified on or after 1 November 2023. See OJ EPO 2023, A29 for more details and some examples.
Enlarged Board of Appeal on transfer of priority right
The recent decisionby the Enlarged Board of Appeal G1/22 and G2/22 has made it easier to demonstrate a valid transfer of priority right. This is good news for patent applicants and patentees who may have struggled with the previous requirements for demonstrating a valid transfer. According to the EPO’s summary of the key considerations, “entitlement to priority is presumed to exist if the formal requirements for claiming priority are fulfilled. This presumption is justified because (i) all parties involved normally have an interest that an application may benefit from a priority right, (ii) there are no formal requirements for the transfer of priority rights, and (iii) the applicant of the priority application has to provide support to the applicant claiming priority (e.g. by providing unpublished documents).”
However, it is important to note that the time of transfer must still pre-date the subsequent filing. This means that while the process of demonstrating a valid transfer may be easier, the timing of the transfer is still crucial. More details can be found in the many comments that were already published on these decisions. See, e.g., the DeltaPatents Blog on decisions G1/22 and G2/22.
EPO Examination Matters ’23
The EPO hosts a great hybrid format conference Examination Matters 2023. The event is very interactive and provides lively discussions on topics of practical relevance for patent practitioners (both substantive and procedural). Check out the conference materials once they become available.
Inspection in infringement proceedings
The German Federal Supreme Court’s recent decision of August 1, 2023, X ZB 9/21 – Aesthetic treatment (“Ästhetische Behandlung”) relates to the balance of confidentiality interests and effective enforcement of a patent or utility model in independent evidentiary procedures.
An expert opinion was prepared based on an inspection of a potentially infringing product. This Supreme Court decision relates to a first instance court order on the provision of the expert opinion to applicant (i.e., the patent or utility model owner who requested the inspection). The Supreme Court held that such an order is appealable by means of immediate appeal (“sofortige Beschwerde”). According to this Supreme Court decision, immediate appeal is available as a legal remedy also when the first instance court orders that the expert opinion be disclosed to applicant despite the respondent (i.e., the alleged infringer) asserting a confidentiality interest (due to the expert opinion including information on trade secrets).
The Supreme Court also held that the respondent has to actively assert its confidentiality interest even if the Patent Office (here: the GPTO) has already provided a negative preliminary opinion on the validity of the asserted utility model or patent, in order to challenge the provision of the expert opinion to applicant.
The importance of this decision is evidenced by the fact that it will be published in the official collection of decisions of the German Federal Supreme Court (BGHZ).
Prior use rights in Germany
In order to rely on a prior use right, the holder of the prior use right must have had in its possession an embodiment falling within the scope of the invention claimed in the asserted patent or utility model. Consistent jurisprudence by German courts has held that there are limitations on the modifications that are still covered by the prior use right. Modifications are generally not permissible if they constitute a more severe act of using the invention claimed in the patent or utility model than the original embodiment that was conceived by the prior use rights holder prior to the effective date of the patent or utility model.
A rule of thumb frequently invoked in infringement proceedings is that a modification is generally not permissible within the ambits of the prior use right if the embodiment as modified falls within the scope of a dependent claim of the patent or utility model, while the original embodiment did not. See, e.g., the discussion of the modified embodiment considered in OLG Düsseldorf, decision of 24.6.2021, 2 U 116/05 – Saugfähige Faserstoffbahn (“absorbent fiber web”).
The German Federal Supreme Court held in its recent decision of 20.6.2023, X ZR 61/21 – Faserstoffbahn (“fiber web”) that there are cases in which a modification which implements features of a dependent claim for the first time may still be covered by the prior use right (even though the embodiment as conceived prior to the effective date of the patent or utility model did not implement the features of the dependent claims). More specifically, the German Federal Supreme Court held that this can be the case if (a) the modification is not associated with a particular technical effect discussed in the patent or utility model, or (b) the modification would have been considered by the skilled person as a matter of routine as of the effective date of the patent or utility model.
The German Federal Supreme Court decision “Fasetstoffbahn” also addresses interesting procedural aspects related to specifics of utility model law.
Claim construction in DE nullity proceedings
A recent decision of the German Federal Patent Court, 2 Ni 30/21 (EP), which relates to one of Signify’s LED technology patents, is illustrative for claim construction in DE nullity proceedings. Patentee wanted a claim feature (“clipped into”) to be understood broadly (which is unusual in nullity proceedings). The German Federal Patent Court interpreted the feature in question much more narrowly. The German Federal Patent Court held that the patent was to be maintained on the basis of a (significantly limited) independent claim of an auxiliary request.
It was due to the very narrow interpretation of the “clipped into” feature that the German Federal Patent Court held that this feature was not disclosed by some of the prior art document (see, e.g., sections II.7.5, 7.6, 7.7, and 7.8 of the reasons of the decision 2 Ni 30/21 (EP)).
This case illustrates that the German Federal Patent Court may give claims a much narrower meaning than the interpretation suggested by patentee. Signify’s LED technology patents continue to provide interesting case law (with German Federal Supreme Court decision of December 20, 2018 – X ZR 56/17 – Schaltungsanordnung III being a well-known example).
UPC time considerations
The UPC has been in operation for 100 days. One of the interesting questions in the early case law relates to whether the time of day is to be taken into consideration when determining which of several events happened first. In a webinar, the colleagues of Hoffmann Eitle have provided insights on such a situation, in which a revocation action (with the central division) and an infringement action (with a local division) were filed on the same day but with a time delay of 19 minutes between them. In the proceedings dealing with the admissibility of the revocation action, the Court had to consider whether time of day is to be taken into consideration for determining which action was filed first (with the deciding decision apparently being of the opinion that time of day matters is relevant when determining which action was filed first, in the interest of legal certainty).
This rationale is interesting in consideration of the fact that (i) in many other jurisdictions, it is only the date that matters (and some Courts, such as the German Federal Patent Court, do not appear to be set up for determining at which time of day an action is received when filed in paper form); (ii) may stakeholders are inclined to adopt a “first to act” strategy (in particular if they believe a local division to be more patentee-friendly than the central division, as also discussed in Hoffmann Eitle’s webinar today), with the time of day being potentially decisive for who was first to act; and (iii) the “smallest unit of time” for determining which event happened first (time of day or date only) can be relevant for scenarios other than infringement / revocation actions, such as determining whether an opt out or UPC revocation was effective earlier (relevant for the admissibility of a UPC revocation action).
EPO T 1946/21 – transfer of priority right
In the recent Board of Appeal decision T 1946/21, Board of Appeal 3.2.03 held that it is sufficient for a transfer of the priority right to be effected on the filing date of the subsequent application, provided that applicant/patentee can demonstrate that the transfer had been effected at the time at which the subsequent application was filed. The Board did not follow appellant’s argument that the transfer had to be effected at the latest on the day preceding the day on which the subsequent application was filed.
Beware that (i) the EPO Guidelines (section A.III.6 in GL version 2023) include language (“the transfer of the application including the priority right (or of the priority right as such) must have taken place before the filing date”) that suggests that stricter criteria may apply, and (ii) national case law of EPC member states (such as BPatG 11 W (pat) 14/09, point II.B.2 a cited in T 1946/21) may require the transfer to have taken place at the latest on the day preceding the filing date.
Thus, if time allows, it is prudent to mitigate potential issues relating to the validity of the priority claim in Europe by (a) effecting a transfer of the priority right to the applicant of the subsequent application at least on the day before the filing date, or (b) filing the subsequent application with the applicant of the priority application being named at least as a co-applicant in the subsequent application.
T 1946/21 also includes interesting passages relating to partial priority issues in light of G 1/15.
UPC developments
For those of you who are interested in UPC-related news, both the Kluwer Patent Blog and JUVE Patent provide updates on recent developments.